DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The prior art documents submitted by applicant in the Information Disclosure Statements filed 06/04/2026 have all been considered and made of record.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Response to Amendments
Applicant’s amendment filed 05/11/2026 has been considered and entered.
The objection to the drawings set forth in the office action received 02/09/2026 is withdrawn in view of the applicant’s claim amendments.
The objection to the claims set forth in the office action received 02/09/2026 is withdrawn in view of the applicant’s claim amendments.
The rejections under 35 USC 112 set forth in the office action received 02/09/2026 are withdrawn in view of the applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claim 12, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “…wherein the waveguide is connected through one or more optical components to the laser…”, and claim 11 on which claim 12 depends recites “…wherein the waveguide is connected through a bus waveguide to a laser…” which is the narrower limitation. Claim 12 is considered indefinite because there is a question or doubt as to whether the feature introduced by the narrower language of claim 11 (on which claim 12 depends) is (a) exemplary of the scope of claim 12, and therefore not required (within the context of claim 12), or (b) a required feature of the claims.
Examiner’s note: For the purposes of further examination, examiner will interpret the “bus waveguide” of claim 11 as being the “one or more optical components” of claim 12.
With regards to claim 13, the claim recites “…wherein the ring waveguide and the bus waveguide includes a same material such that the waveguide and bus waveguide include a high quality factor (Q) resonator…”. It is unclear whether the waveguide and bus waveguide comprise a resonator, or if an additional resonator component is to be included within the system. The claim is indefinite because the current limitations create confusion regarding the structure of the claimed device.
Examiner’s note: For the purposes of further examination, examiner will interpret the waveguide and bus waveguide as comprising a resonator.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 7-9, 11-15 and 17-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bratkovski (US 20090245714 A1).
With regards to claim 1, Bratkovski discloses a stress-optical modulator comprising:
a piezo-electric actuator, wherein the piezo-electric actuator has a circular shape (Bratkovski/Fig5/Piezoelectric actuator [506, 510, and 516]; Paragraph 48/Lines 1-2); and
a waveguide separated from the piezo-electric actuator by a top cladding layer, wherein the waveguide has a circular shape (Waveguide 502 and top cladding 504);
wherein the piezo-electric actuator is offset from the waveguide such that an offset distance is defined between a center of the waveguide and an inner surface of the piezo-electric actuator (Offset distance and inner surface “S” as indicated below),
PNG
media_image1.png
396
497
media_image1.png
Greyscale
wherein the piezo-electric actuator is configured to change the guiding properties of the waveguide based on the voltage applied to the piezo-electric actuator by inducing strain through the top cladding layer to change the optical properties of the waveguide (Fig5; Abstract).
With regards to claim 2, Bratkovski discloses the stress-optical modulator of claim 1, wherein the piezo-electric actuator comprises a piezo-electric material positioned between two electrodes (Piezoelectric material 516 and electrodes 506 & 510).
With regards to claim 3, Bratkovski discloses the stress-optical modulator of claim 2, wherein the piezo-electric material comprises lead zirconate titanate (PZT) or aluminum nitride (Paragraph 48/Lines 9-13).
With regards to claim 5, Bratkovski discloses the stress-optical modulator of claim 2, wherein one of the two electrodes contact the top cladding layer (Fig5).
With regards to claim 7, Bratkovski discloses the stress-optical modulator of claim 1, wherein the piezo-electric actuator does not overlap with the waveguide in a direction perpendicular to a major extending direction of the waveguide (Direction of zero overlap [as indicated below]).
PNG
media_image2.png
460
556
media_image2.png
Greyscale
With regards to claim 8, Bratkovski discloses the stress-optical modulator of claim 1, further comprising:
a substrate (Fig3/Substrate 305); and
a bottom cladding layer positioned on the substrate, wherein the waveguide is supported by the bottom cladding layer (Fig5/Bottom cladding layer 508).
With regards to claim 9, Bratkovski discloses the stress-optical modulator of claim 8, wherein the waveguide has a refractive index which is higher than that of the top cladding layer and the bottom cladding layer (Paragraph 40/Lines 4-5; Paragraph 41/Lines 9-14).
With regards to claim 11, Bratkovski discloses the stress-optical modulator of claim 1, wherein the waveguide is connected through a bus waveguide to a laser (Fig3/Laser 307 and bus waveguide 303; Paragraph 34/Lines 1-4).
With regards to claim 12, Bratkovski discloses the stress-optical modulator of claim 11, wherein the waveguide is connected through one or more optical components to the laser (Fig3/One or more optical components 303 [See the 35 USC 112 section of this office action]).
With regards to claim 13, Bratkovski discloses the stress-optical modulator of claim 11, wherein the waveguide and the bus waveguide comprises a same material (Paragraph 32/Lines 1-4; Paragraph 40/Lines 4-5). Bratkovski does not explicitly state that the resonator has a high Q value. However, the Q value of the resonator of claim 13 presumed to be inherent to the structure of the stress-optical modulator. When a structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP 2112.01). The patentability of a product depends only on the claimed structural limitations of the product. Bratkovski discloses a stress-optical modulator that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the prior art device does not possess the claimed properties or is not capable of these functional characteristics. (See MPEP 2112.01). The examiner notes that if the claimed structure does not possess the claimed properties or is not capable of performing the claimed functions, then the claims would be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections necessary to clearly and precisely define the invention, wherein the structure necessary to provide the claimed properties or perform the claimed functions is essential.
With regards to claim 14, Bratkovski discloses the stress-optical modulator of claim 11, wherein the waveguide, the bus waveguide, and the laser are planar (Fig3).
With regards to claim 15, Bratkovski discloses the stress-optical modulator of claim 1, wherein the piezo-electric actuator covers less than 50% of the waveguide (Fig5/Waveguide covered surfaces [Undotted] and uncovered surfaces [Dotted] as indicated below).
PNG
media_image3.png
432
561
media_image3.png
Greyscale
With regards to claim 17, Bratkovski discloses the stress-optical modulator of claim 1. Examiner notes that "wherein an input signal to the piezo-electric actuator a DC signal, an AC signal, or a broadband DC to AC signal" is an intended use of the stress-optical modulator. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)) (See MPEP § 2111.02, II and MPEP § 2114, II).
With regards to claim 18, Bratkovski discloses the stress-optical modulator of claim 1, wherein the waveguide comprises a material selected from the group consisting of a material with a third order (Kerr) nonlinearity, a material with a second order nonlinearity, a material of with anomalous material and resonator dispersion, and a material of with normal material and resonator dispersion (Material with third order (Kerr) nonlinearity [“…Silicon…”]).
With regards to claim 19, Bratkovski discloses the stress-optical modulator of claim 1, wherein the waveguide has a shape selected from the group consisting of: a ring resonator, a loop resonator, a coil resonator, and a racetrack resonator (Figs3&5).
With regards to claim 20, Bratkovski discloses the stress-optical modulator of claim 1, wherein the waveguide comprises a material selected from the group consisting of: silicon nitride, tantalum pentoxide, alumina oxide, and aluminum nitride (Paragraph 40/Lines 4-5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bratkovski (US 20090245714 A1).
With regards to claim 4, Bratkovski discloses the stress-optical modulator of claim 3, but is silent regarding the two electrodes comprising platinum. However, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select platinum as the electrode material since doing so would increase device reliability in adverse conditions.
With regards to claim 16, Bratkovski discloses the stress-optical modulator of claim 1, but does not explicitly state that the offset distance is from 2 μm to 5 μm. Bratkovski discloses the general conditions of the offset as claimed, but does not state a scale for the waveguide, and by extension, does not state a magnitude for the offset distance. However, micron-scale waveguides are commonplace in the art, and it would have been an obvious matter of common skill and design choice to a person having ordinary skill in the art to configure the width of the waveguide of Bratkovski such that the offset distance was between 2 μm and 5 μm since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bratkovski (US 20090245714 A1) in view of Smith (US 20090310902 A1).
With regards to claim 10, Bratkovski discloses the stress-optical modulator of claim 9, but is silent regarding the top cladding layer having a refractive index which is different from the refractive index of the bottom cladding layer. However, the practice of configuring top and bottom cladding layers to have different refractive indices exists in the art as exemplified by Smith.
Bratkovski and Smith are considered to be analogous in the field of optical cladding. Bratkovski and Smith both disclose cores with upper and lower cladding. Smith further teaches a core with upper and lower cladding wherein the upper and lower cladding do not have the same refractive index (Smith/Claim 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the upper and lower cladding to not have the same refractive index as suggested by smith since doing so would allow for different degrees of optical containment on the upper and lower sides of the waveguide respectively.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bratkovski (US 20090245714 A1) in view of Wilmart (US 20200033645 A1).
With regards to claim 21, Bratkovski discloses the stress-optical modulator of claim 1, wherein the piezo-electric actuator comprises PZT (Paragraph 48/Lines 9-13), and the modulator functioning at a wavelength selected from the group consisting of: a visible wavelength range of 400 nm to 750 nm, a near IR from 700 nm to 2500 nm, and a mid IR from 2.5 μm to 25 μm (Paragraph 24/“…850-1600 nm…”), but is silent regarding the waveguide comprising silicon nitride. However, the practice of selecting silicon nitride as a waveguide material exists in the art as exemplified by Wilmart.
Bratkovski and Wilmart are considered to be analogous in the context of optical modulator rings. Wilmart and Bratkoski both disclose ring resonator waveguides. Bratkovski teaches silicon nitride as a material for a ring resonator waveguide (Wilmart/Paragraph 10/Lines 7-8; Paragraph 17/Lines 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select silicon nitride as the material for the ring resonator waveguide of Bratkovski as suggested by Wilmart since doing so would make the waveguide less sensitive to manufacturing roughness. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
With regards to claim 22, Bratkovski discloses the stress-optical modulator of claim 1, wherein the piezo-electric actuator comprises PZT (Paragraph 48/Lines 9-13), and the modulator functions at a far-UV range from 100 nm to 200 nm, a mid-UV from 200 nm to 300 nm, a near UV from 300 nm to 400 nm, and out to visible, near IR and mid-IR from 400 nm to 2350 nm (Paragraph 24/“…850-1600 nm…”), but is silent regarding and the waveguide comprising tantalum pentoxide or alumina oxide or aluminum nitride. However, the practice of selecting silicon nitride as a waveguide material exists in the art as exemplified by Wilmart.
Bratkovski and Wilmart are considered to be analogous in the context of optical modulator rings. Wilmart and Bratkoski both disclose ring resonator waveguides. Bratkovski teaches silicon nitride as a material for a ring resonator waveguide (Wilmart/Paragraph 10/Lines 7-8; Paragraph 17/Lines 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select silicon nitride as the material for the ring resonator waveguide of Bratkovski as suggested by Wilmart since doing so would make the waveguide less sensitive to manufacturing roughness. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
This prior art, made of record, but not relied upon, is considered pertinent to applicant’s disclosure since the following references have similar structure and/or use similar structure and/or similar optical elements to what is disclosed and/or claimed in the instant application:
Kippenberg (US 20240302682 A1) [Figs4a-6b; Paragraph 139]
Cunningham (US 9442314 B2) [Figs1-2]
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc E Manheim whose telephone number is (703)756-1873. The examiner can normally be reached 6:30am - 5pm E.T., Monday - Tuesday and Thursday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas A Hollweg can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARC E MANHEIM/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
Prosecution Insights